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The latest games trademark controversy: S.T.A.L.K.E.R. vs STALKER

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This is a blog post by Jas Purewal of UK/European video games law firm Purewal & Partners and was originally published on Gamer/Law. It ain't legal advice, it's opinion, mkay?

If you haven't played the S.T.A.L.K.E.R. series of PC video games, you really should - it's a glorious first person survival shooter based in and around a fictional Ukraine where the Chernobyl nuclear plant exploded a second time and changed the world around it (it's based loosely on the excellent Stugatsky brothers' short science fiction novel, Roadside Picnic). Some of my best memories about emergent storytelling in games come from that series.

Anyway, enough of the games nostalgia. I'm writing about STALKER (as I shall call it, to save my poor '.' key) for cold legal purposes, because it is generating our latest games trademark controversy. More in a moment, but first I want to credit two articles on the legal issues with STALKER which were influential on me: this Polygon feature on the story more generally and this PC Gamer article on the trademark troubles just now.

GSC Game World, a studio in Ukraine founded and owned by one Sergiy Grygorovych, developed three Stalker games and then, for reasons which still aren't clear, the studio went under in very acrimonious circumstances. A number of successor studios sprang up and all are creating games which to greater or lesser extents are inspired by the STALKER series to date. One of those studios is an outfit called West Games.

West Games got into some hot water recently when they launched a Kickstarter campaign to fund their take on the Stalker series, which they were to call "Areal". Apparently they made a number of misleading or false claims about the makeup of their team and the game and, as a result, the campaign was pulled by Kickstarter even though it had been successfully funded.

Now it seems, that undeterred by these issues in the past, West Games want to launch another crowdfunding attempt for their game, but now they have renamed it to "STALKER".

PC Gamer quoted West Games as saying: "We have registered a trademark for Stalker Apocalypse, and have every right to use it as our title. Stalker by itself is a common word, and anyone can use it."

Oh dear, this is going to end in tears. Here's why:

A games studio which creates and releases a game name will have certain basic legal rights in that game name. These are commonly known as 'unregistered trademark rights' and can be used, usually with some difficulty, to challenge rival and similar game names.

The games studio can make those rights much stronger by actually registering their claim to the game name, which gives them a 'registered game right'.

As I've explained previously, trademarks are NOT a monopoly right: just because Apple has a trademark over the word "Apple" and the Apple logo doesn't mean they control all uses of them, forever.

The basic test for trademark infringment is: (i) are they similar products (e.g. are they both games); and (ii) is there a consumer 'likelihood of confusion' between the two? Would consumers think that a new, rival game called "STALKER" was the same as the original game series "S.T.A.L.K.E.R." and buy it under that mistake?

In addition, a trademark has to be registered for the economic activities for which it will actually be used, e.g. 'video games'. If your trademark doesn't cover what you're actually doing with the product, it doesn't help you.

Cosmetic differences between two product names, such as whether or not they use a '.' between letters, is usually irrelevant if consumers wouldn't think it makes a difference.

If a trademarked game name is completely commonplace or has been registered and used elsewhere often without opposition, or there is some other huge problem with it, then you might be able to make a legal claim to have the trademark invalidated - and then you could use the name yourself freely. But that isn't easy to do and it won't protect you from being sued in the meantime.

So are there STALKER trademarks? Who owns them?

A quick look at the public OHIM trademark database indicates that the owner of GSC Game World (which you'll remember was the original STALKER game development studio), our good friend Sergiy Grygorovych, owns WIPO-registered trade marks in:

The word "S.T.A.L.K.E.R" - but only for comic books, writing aids and certain types of clothing (not video games and for some reason it doesn't apply at all in Germany or Russia).

A "GSC S.T.A.L.K.E.R. GAME WORLD" logo - but only for an extraordinarily eclectic range of writing and household products including "tablecloths of paper; clips for offices; stapling presses (office requisites); loose-leaf binders; scrapers (erasers) for offices; paper-clips; silver paper; steel letters; steel pens" to name but a few. Not video games.

For completeness 1: there were 2 failed attempts to get US trademarks for the words "S.T.A.L.K.E.R.: SHADOW OF CHERNOBYL".

For completness 2: for STALKER game fans, no attempts seems to have been made to obtain trademarks for the second STALKER game, "Clear Sky" (not sure why, I can't obviously see any rival trademarks for games which would have prevented it).

Suffice to say this is a somewhat incomplete trademark portfolio and a good trademark lawyer could potentially have a crack at finding loopholes in it. Also, oddly, there are two sets of trademarks - one for "Sergiy Grygorovych" and one for "GRIGOROVICH Sergiy Kostyantinovich". Anyway, that's not necessarily anything bad or unusual - oftentimes it's not practically possible to obtain the full trademark protections one would like, especially because the word "Stalker" can and has been used in many other products all of which may have legitimate competing trademark interests. What happened here is that a local law firm did the initial (not very good) trademarks and then a second law firm (a bit better) did more, later on. In fact, there was a third law firm involved at one stage too!

Back to West Games:

The fact that there are registered trademarks (even if not totally bulletproof) for "S.T.A.L.K.E.R" does not bode well for a competing "STALKER" series, particularly where the trademark owner is very invested in protecting those rights against the newer studios (legitimately) making similar games. The fact that West Games does not use '.' in its game name probably isn't enough. The fact that 'stalker' is a frequently used word in English and other languages probably isn't enough. The fact that their new game is so similar to the original game series is a problem.

For completeness: as best I can tell from the US TESS and the EU OHIM trademark databases (which between them cover everything that matters in the Western games industry, frankly), West Games has NOT yet applied for any West Games or STALKER trademarks, notwithstanding what they have said publicly. It is possible they are still very new and being processed, but I can't see any public evidence of them yet.

But it gets even more complicated:

As some folks have pointed out to me, even if the situation between GSC Game World, West Games and the other successor studios was clear (which it isn't), there are other legal problems affecting STALKER:

(i) The whole concept of 'stalkers' derives not just from the book 'Roadside Picnic' which I mentioned earlier, but also from the 1979 film 'Stalker' by the Russian director Andrei Tarkovsky, which itself was based loosely on Roadside Picnic. It seems that certain legal rights flowed from this film, but the relationship between it and the original STALKER game series (if any) was never quite made clear.

(ii) When GSC Game World shut down, its German publishing partner Bitcomposer claimed that it had all the rights to STALKER, but again it wasn't clear where they came from: a publishing contract? A licence of rights from the Stugatsky or Tarkovsky estates? Gamasutra looked into in 2012 in some detail here.

Both of these seem to make any game called 'STALKER' that much more complicated still.

What should have happened:

One of two things. Thing the first: don't call it STALKER! Simple. Thing the second: call it STALKER but sign a co-existence agreement with at least the trademark owner so that you can both use the name without legal troubles.

What a developer should not do is leave a games studio, build a game that is similar to the one he/she was working on before and call it virtually the SAME NAME and then basically dare the trademark owner to sue him/her. That a good business strategy does not make, folks.

Nonetheless, I hope it all gets sorted out:

Back to square one: I LOVED the STALKER series - in fact, God's honest truth, in my spare time I started to play through the third game last week - and I hope very much that the different studios which emerged out of the ashes of GSC Game World can live in more harmony in the future. Fingers crossed...